## Facts

- One-E-Way, Inc. owned U.S. Patent Nos. 7,865,258 and 8,131,391, directed to wireless digital audio systems that permit multiple users in the same space to listen privately on wireless headphones without interfering with each other.
- Asserted claims included the limitation that the system operates “virtually free from interference” from other wireless devices operating in the same spectrum.
- The patents did not define “virtually free from interference” by a numeric threshold, but described the invention’s goal as “private listening without interference” in multi-user environments.
- During prosecution, One-E-Way emphasized that the invention prevented eavesdropping (i.e., other users hearing a listener’s audio).
- One-E-Way filed a Section 337 complaint at the International Trade Commission (ITC) alleging infringement by various respondents importing accused products.
- The ITC held “virtually free from interference” indefinite under 35 U.S.C. § 112 and treated the asserted claims containing that limitation as invalid, resulting in a finding of no Section 337 violation.
- One-E-Way appealed the ITC’s indefiniteness determination to the Federal Circuit.

## Issues

1. Whether the claim term “virtually free from interference,” read in light of the specification and prosecution history, fails to inform a person of ordinary skill in the art of the claim scope with reasonable certainty under 35 U.S.C. § 112.

## Decision

- The Federal Circuit reversed the ITC’s determination that “virtually free from interference” is indefinite.
- The court held the intrinsic record provided sufficient guidance to inform a skilled artisan, with reasonable certainty, that the limitation concerns preventing audible intrusion/eavesdropping between users in a multi-user wireless setting.
- The case was remanded for further ITC proceedings consistent with the court’s construction and definiteness holding.
- Chief Judge Prost dissented, concluding the term lacked objective boundaries and remained indefinite.

## Legal Principles

- A claim is indefinite if, read in light of the specification and prosecution history, it fails to inform those skilled in the art about the scope of the invention with reasonable certainty.
- Terms of degree (e.g., “virtually”) are not per se indefinite; they may satisfy § 112 when the intrinsic record supplies objective boundaries for claim scope.
- Definiteness does not require mathematical precision; functional and contextual constraints in the intrinsic evidence can provide the required reasonable certainty.

## Conclusion

The Federal Circuit held that “virtually free from interference,” understood through the patents’ focus on private listening and the prosecution history’s emphasis on preventing eavesdropping, provided reasonably certain claim scope, reversing the ITC’s indefiniteness ruling and remanding for further Section 337 analysis.


One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059 (Fed. Cir. 2017)